Trademark Infringement and Product Disparagement

James DiTommaso

In order to protect the goods and services that they offer, companies will often use a trademark in conjunction with their product. Once a company is recognized by their trademark, other parties may be tempted to imitate that trademark when selling their own goods or services in an attempt to take advantage of the other company’s well-known name. This is known as trademark infringement, and while those who infringe on other people’s trademarks may think that minor alterations to the trademark are enough to protect them from a lawsuit, this assumption is incorrect.

Companies can register their trademarks federally or with a state. When a trademark infringement lawsuit is filed, courts will compare the original trademark and the allegedly infringing one to determine whether a label is similar enough to a registered trademark to cause confusion.

In some cases, even if the trademarks are not sufficiently similar to be likely to cause confusion, if the registered trademark is well known, infringement may still be established in accordance with the Paris Convention for the Protection of Industrial Property, which is was an international convention which established, among other things, international property laws.

Because the United States recognizes common law trademark rights, a trademark must be registered in order for the owner to file a lawsuit for infringement. However, even in this instance, the owner of the trademark may be able to file a lawsuit for deceptive business practices under common law for passing off or misrepresentation. The Trademark Counterfeiting Act of 1984 makes it illegal to intentionally violate the Lanham Act by selling or trading counterfeit goods or services within the United States. In the event that an individual or company uses a trademark which is identical or similar to that of a competitor, the competitor can file a private cause of action under the Lanham Act which provides for monetary and equitable remedies.

In some instances, someone other than the owner of the registered trademark is eligible to file a lawsuit for trade infringement. This would include a licensee or franchisee of a trademark who has reason to fear that their business would be negatively affected as a result of the infringement.

Under the relevant statutes, in order to be eligible for a trademark infringement claim, the defendant must be able to prove that the infringement of the trademark had a substantial effect on interstate commerce. There are several ways in which a defendant can fulfill the “interstate commerce” requirement. These include: advertising in multiple states; moving between state goods which bear an infringing mark; sending a product to another state for the purpose of registering a trademark; and advertising in newspapers which have interstate distribution.

A plaintiff who is successful in a claim for trademark infringement, trademark dilution, or false advertising in violation of the Lanham Act may be entitled to injunctive relief, an accounting for profits, damages (up to triple the actual damages in certain cases), the costs of bringing the lawsuit, and attorneys’ fees.

The attorneys at DiTommaso have decades of experience litigating claims of trademark infringement. We are dedicated to protecting the rights of trademark owners and we have the skills necessary to do so effectively. To consult with a knowledgeable attorney today, contact us online or give us a call at 630-333-0000.

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